Dispute Resolution Service

30 March 2001

Michael Heltzer
The International Trademark Association (INTA)

Comments of the International Trademark Association

INTRODUCTION The International Trademark Association (INTA) takes this opportunity to offer its response to Nominet's proposed changes to its Dispute Resolution Service. INTA is a 122-year-old not-for-profit organization dedicated to, among other things, educating business, the media and the worldwide public on the proper use and importance of trademarks. We have more than 4,000 members in 120 countries around the world. We compliment Nominet's efforts to uphold a public consultation process before the Council of Management makes policy decisions. Considering the expanse of the Internet, all steps towards policy uniformity are of utmost importance to trademark owners and Internet users. These comments arise from an in depth knowledge of the Internet and our close surveillance of ccTLD policies throughout the world.

INTA elects to respond to certain provisions of the policy that are of greatest importance to our members. Our silence on the remaining provisions does not indicate our agreement or disagreement. In general, we applaud Nominet for taking steps towards implementing a Policy that is reminiscent of the ICANN Uniform Dispute Resolution Policy ("UDRP"). The UDRP was adopted only after abundant public consultation and its particular language is carefully drafted. While we appreciate Nominet's effort in this regard, we have concerns about some provisions that are not consistent with existing, cross-jurisdictional principles of law. Our concerns are noted in the following commentary.

2. DISPUTE RESOLUTION SERVICE

Section 2(a)(i)

The language of UDRP Section 4(a) provides that a domain name registrant must submit to proceedings if a complainant asserts that the registrant's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and the registrant has no rights or legitimate interests in respect of the domain name, and the registrant's domain name has been registered and is being used in bad faith.

Nominet's proposal to implement a Policy requiring a registrant to submit to proceedings if it is asserted that: "The Complainant has rights in respect of a name or mark which is identical or similar to a Domain Name...." causes us concern. The Internet is international in nature, and international principles of law must be considered when drafting language such as this. The concept of words being identical or confusingly similar has been established in trademark law in jurisdictions across the world, and we do not see a benefit to Nominet creating a policy that is not supported by existing principles of law.

Section 2(b)

The Policy currently proposes that the complainant must prove beyond a reasonable doubt that the domain name has been registered and/or is being used in bad faith. While INTA respects that Nominet wishes to maintain a conservative position and not foster an environment where proceedings are abundant, this burden of proof standard is consistent with what is internationally required in criminal matters, not civil disputes. It is unnecessarily burdensome to place this requirement on the complainant, and is damaging to the overall purpose of maintaining a usable domain name Dispute Resolution Policy. INTA strongly recommends that Nominet adopt language similar to that, which is used in the UDRP and in law governing civil disputes. The parties should be required to present evidence of the registration and use of a domain name in bad faith and, if necessary, allow the expert to draw inferences from the material presented. The criminal evidence standard is not applicable to domain name disputes.

4. HOW THE RESPONDENT MAY DEMONSTRATE THAT IT HAS NOT REGISTERED AND/OR IS NOT USING THE DOMAIN NAME IN BAD FAITH IN ITS RESPONSE

Section 4(a)(i)(B)

INTA does not support the content of 4(a)(i)(B) where the respondent may claim that they have "been commonly known by the name or legitimately connected with mark which is identical or similar to the Domain Name." As written, this provision creates a giant loophole for an individual to adopt or allege that a trademark is a nickname in order to obtain the domain name that corresponds to that nickname. Moreover, there is not a reasonable burden of proof test that could be imposed upon an applicant to demonstrate their rights in a nickname. It would also be impractical to expect a complainant to disprove an applicant's assertion that the domain name is their commonly known nickname. Finally, it is unclear how long the applicant must be known by the nickname in order to deem him or herself commonly identified by it, and who must commonly know the name. The ambiguity of this provision is dangerous to the success of the UK namespace.

Section 4(a)(ii)

INTA suggests that when creating a "generic" word policy, Nominet give consideration to having the provision instead relate to "dictionary" words. Under trademark law, the term "generic" has a very definite meaning. Indeed, "when the word that formerly served as a trademark comes to signify to the general public the kind of product or service it names rather than representing a particular brand of that product or service," it has become "generic" (Mycounsel.com, Intellectual Property, "How Trademarks Become Generic," http://www.mycounsel.com/content/intelprop/trademark/nolonger/howgeneric.html). More importantly, INTA notes that "dictionary" words can and often do in fact serve as trademarks so long as they are not descriptive of the goods or services to which they are applied. For example, a company can receive a trademark registration for "winery" for a clothing line. As there has been some confusion in the Internet community with respect to this issue, a clarification by Nominet would be most helpful.

7. NOTIFICATION OF PUBLICATION

INTA applauds Nominet's proposal to publish the Dispute Resolution Policy decisions on its web site. It is important that the public, domain name registrants and trademark owners included, have an opportunity to assess their position based on existing decisions. We note that the policy does not seem to indicate how decisions will be effected by Nominet (domain name transfers, if they are so called for), and are curious as to what type of schedule will be adopted.

11. TRANSFERS DURING A DISPUTE

Section 11(a)(ii)

INTA notes its concern about the option given to a domain name registrant that would allow a domain name to be transferred to another party during a proceeding. In order for the policy to serve as an effective part of the efficient and complete resolution of domain name disputes, it should preserve the full ability of the parties to revert to court proceedings if appropriate. By allowing the transfer of domain names during dispute proceedings, however, the proposed policy would unnecessarily complicate the proceeding and jeopardize the ability of the complainant to obtain adequate relief via a civil court proceeding. We also note that this feature of the policy would be inconsistent with the UDRP and the practices of other ccTLD registrars, who freeze the domain name at issue until a resolution is attained.

CONCLUSION

INTA appreciates this opportunity to provide comments to Nominet and welcomes the chance to consult on future proposals related to the development of the UK namespace.